August 4, 1999

The Honorable Philip M. Crane
Chairman, Subcommittee on Trade
Committee on Ways and Means
U.S. House of Representatives
Room 1104 Longworth House Office Building
Washington, D. C. 20515

Re: World Trade Organization Negotiating Objectives

Dear Mr. Chairman:

The American Intellectual Property Law Association (AIPLA) would like to present its views on the negotiating objectives for the Third Ministerial Conference of the WTO to be held in Seattle from November 30 - December 3, 1999.

The AIPLA is a national bar association whose more than 10,000 members are engaged in private and corporate practice, in Government service, and in the academic community. The AIPLA represents a wide and diverse spectrum of individuals, companies, and institutions involved directly or indirectly in the practice of patent, trademark, copyright and unfair competition law, as well as other fields of law affecting intellectual property.

The AIPLA strongly believes that the mandated negotiations, reviews, and work programs called for by the Agreement on the Trade Related Aspects of Intellectual Property Rights (TRIPs) will present the United States Government with significant challenges from its trading partners who either wish to strengthen protection in areas of little or no interest to the United States (e.g. geographical indications) or to undermine protection of intellectual property in areas of significant interest to U.S. industry (e.g. biotechnology). It is the view of AIPLA that the United States should not risk diluting its efforts to protect U.S. interests by proposing, or agreeing to proposals from other Members, to seek heightened levels of protection of intellectual property in any new round of trade talks. To do so could result in a lowering of the obligations in TRIPs to protect intellectual property.

Article 23.4 of TRIPs calls for negotiations to be undertaken in the TRIPs Council regarding the establishment of a multilateral system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system. According to Article 24.2, the TRIPs Council is to review the application of the provisions of all of Section 3 of the TRIPs agreement dealing with geographical indications within 2 years of the entry into force of the WTO Agreement.

We understand that an initial review of the TRIPs provisions dealing with geographical indications has been undertaken. Further, we understand that last Fall the European Commission (EC) proposed enhanced protection for geographical indications along the lines of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration. The EC proposal would have Members notify the WTO of geographical indications which they wish to protect. Other members would then have one year in which to oppose the granting of protection of such indications in their territories. In the absence of any opposition by a Member, or if such opposition was not successful, the Member would have the obligation to protect the notified indication in its territory. While Article 23.4 speaks of protection of geographical indications for wines, the Singapore Ministerial adopted a resolution to the effect that spirits should also be included in any preparatory work in this area, and we are aware that other Members of the WTO are advocating similar protection for geographical indications for coffee, tea, and rice.

Earlier this year, in response to the proposal from the EC, we understand that the United States and Japan offered a proposal under which the WTO would establish a database of submissions of geographical indications for wines and spirits which Members proposed to have protected. Under the U.S. proposal, however, each Member would be free to determine under its national law whether such indications would receive protection in its territory.

As you are well aware, the proposal to protect geographical indications was an EC initiative during the Uruguay Round which the United States and a number of other "younger nations" resisted. While the United States has always provided strong protection to prevent the misleading or confusing use of geographical indications for all products and services, this EC initiative is largely stimulated by a desire to "roll back the clock" with respect to terms which have become generic in the United States and other nations. It is largely for that reason that the United States has never had an interest in participating in the Lisbon Agreement.

We recognize that the United States must honor its obligations under the TRIPs Agreement, and therefore do not oppose the efforts undertaken by the United States, Japan, and other nations to advance a proposal for the enhanced protection of geographical indications which is consistent with U.S. jurisprudence and adequately protects existing commercial practices in this country. However, this is an area where we can certainly anticipate a determined effort by the EC, with the support of certain developing countries such as India and Brazil, to promote a far-reaching regime for protecting geographical indications if intellectual property becomes one of the topics of negotiation in a new trade round. This would not be in the best interests of the United States and is a compelling reason for not injecting intellectual property into any presently contemplated trade talks.

Article 27.3(b) of TRIPs provides that Members may exclude from patentable subject matter plants and animals other than microorganisms, and essentially biological processes for the production of plants or animals. This subparagraph further provides that it is to be reviewed four years after the date of entry into force of the WTO Agreement.

We understand that a review of Article 27.3(b) has begun and that Members are exchanging information on the biological subject matter exceptions to patentable subject matter which they currently have in their national laws. To this end, we understand that the WTO Secretariat has circulated a questionnaire on this topic and plans to prepare a synoptic table which will be discussed at an upcoming meeting of the TRIPs Council.

When the requirement to review the biotechnology exceptions to patentable subject matter was included in Article 27.3(b), it was contemplated that such review would lead to the conclusion that such exclusions were counterproductive and should be narrowed or eliminated. Unfortunately, efforts by many Members and some international intergovernmental organizations are calling into question whether the exceptions to patentable subject matter are too narrow and, instead of being further reduced or eliminated, should be expanded. Obviously, we urge the United States to advocate strongly the reduction or elimination of these exceptions to patentable subject matter for biological products and processes. However, we believe that the present climate also suggests that it would be extremely unwise for the United States to inject intellectual property into any presently contemplated trade round. While the United States may not be able to achieve the originally envisioned goals of reducing or eliminating the exclusions from patentable subject matter that are contained in Article 27.3(b), at least these exceptions cannot be broadened if the TRIPs Agreement is not subject to renegotiation.

Article 65.2 permits developing country Members to delay until January 1, 2000 the implementation of most of the obligations contained in the TRIPs Agreement (One notable exception is the obligation to extend product patent protection to areas of technology not previously protected in a developing country Member. This obligation will take effect only on January 1, 2005). Accordingly, in a matter of only a few months, approximately 100 developing country Members of the TRIPs Agreement will be required to fully implement the vast majority of the obligations of TRIPs. The difficulties which these countries will face in this task cannot be overstated. Nor can the challenge that the United States and its other developed country trading partners will face in ensuring that developing country Members properly implement their TRIPs obligations. With the requirement in Article 71.1 for the TRIPs Council to review the implementation of the Agreement after the expiration of this transitional period for developing country Members, it is all but certain that there will be pleas from such Members that their obligations be delayed and/or relaxed. Neither of these alternatives will be possible if intellectual property is not a topic of negotiation in any new trade round.

The AIPLA believes that the challenges which the United States will face in international trade negotiations in the next few years are daunting. There will be tremendous pressures coming from both the EC and developed country Members of TRIPs to modify the TRIPs regime in ways inimical to U.S. interests. We firmly believe that the United States should not inject into any new trade talks proposals for protecting intellectual property, and should resist similar efforts by others. TRIPs is a success, but an unfinished success. The efforts of the United States should be focused on completing the tasks at hand of securing the full implementation of TRIPs before seeking new protections.

The AIPLA applauds you, Mr. Chairman, for your continuing careful oversight of the WTO and the Seattle Ministerial and appreciates the opportunity to provide comments. We look forward to continued successes by the United States Government in achieving strong worldwide protection for the intellectual property of United States citizens and entities.

Sincerely,

Michael K. Kirk
Executive Director